Judge strips 13 patent claims from Motorola suit v. Microsoft

Question of how much money Microsoft must pay Motorola still to be decided.

A patent battle between Microsoft and Google-owned Motorola Mobility was brought one step closer to resolution this week when a US District Court judge threw out 13 of the patent claims Motorola made in the case.

It is far from a crippling blow to Motorola, however. Judge James Robart of US District Court in Seattle is tasked with deciding what is a "fair and reasonable" rate for the license fees Microsoft should pay Motorola for use of patents tied to H.264 video and Wi-Fi standards. Microsoft proposed a payment of $1.21 million per year to Motorola, but Motorola demanded 2.25 percent of the sale price of Windows PCs and Xbox 360s, which Microsoft has said could amount to billions. While Motorola sued Microsoft for patent infringement, Microsoft also sued Motorola for not meeting its obligation to license standards-essential patents at fair and reasonable rates, leading to multiple court cases being consolidated into one.

While the case as a whole could have far-reaching consequences, the latest development is minor in comparison. Motorola claimed that three video patents (here, here, and here) related to encoding and decoding digital video are infringed by Windows 7 and Internet Explorer 9. These make up just a subset of the 16 video patents asserted by Motorola against Microsoft in this case, and the judge didn't kill the three patents completely. While Robart dismissed 13 claims, there were 32 overall.

Robart's order granting Microsoft's motion for partial summary judgment (PDF) agreed with Microsoft's contention "that the 'means for decoding' and 'means for using' elements recited in the Claims-at-Issue are invalid as indefinite because the Patents-in-Suit do not adequately describe a corresponding structure." The decision, written Wednesday and posted publicly yesterday, related just to the video patents in the case, not the wireless ones.

There's no scheduled date for the big decision that will determine how much money Microsoft has to pay Motorola, but Microsoft has told Ars it expects the verdict to come down in late February or March. To learn more about the case, read our pre-trial explainer.

25 Reader Comments

" "that the 'means for decoding' and 'means for using' elements recited in the Claims-at-Issue are invalid as indefinite because the Patents-in-Suit do not adequately describe a corresponding structure.""

I expect that this reasoning can be used in a lot more of software patent trials.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Gone are the days when people claimed that Google was "good" and that they did no evil.Google is a company like every other massive technology company. They want to win marketshare. They want their stock-price to go up and to give money to their shareholders.

In August 2011 when Google announced that it would buy Motorola mobility, some people on Ars (Including me) said that Google would eventually use patents to attack other companies. Now this reality is becoming clear.

Gone are the days when people claimed that Google was "good" and that they did no evil.Google is a company like every other massive technology company. They want to win marketshare. They want their stock-price to go up and to give money to their shareholders.

In August 2011 when Google announced that it would buy Motorola mobility, some people on Ars (Including me) said that Google would eventually use patents to attack other companies. Now this reality is becoming clear.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Google was asked about this at acquisition time and they stated outright that they intended to pursue the strategy. If they disagreed with it they would have settled by now. As part of the acquisition all legal actions had to be approved by them, and they continued to approve Motorola's actions up thorugh even today.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Google was asked about this at acquisition time and they stated outright that they intended to pursue the strategy. If they disagreed with it they would have settled by now. As part of the acquisition all legal actions had to be approved by them, and they continued to approve Motorola's actions up thorugh even today.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Google was asked about this at acquisition time and they stated outright that they intended to pursue the strategy. If they disagreed with it they would have settled by now. As part of the acquisition all legal actions had to be approved by them, and they continued to approve Motorola's actions up thorugh even today.

This is officially a Google strategy now.

But they haven't filed any new lawsuits either.

Who is left for them to sue? They nailed the big players already and are wrapped up in those suits.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Google was asked about this at acquisition time and they stated outright that they intended to pursue the strategy. If they disagreed with it they would have settled by now. As part of the acquisition all legal actions had to be approved by them, and they continued to approve Motorola's actions up thorugh even today.

This is officially a Google strategy now.

But they haven't filed any new lawsuits either.

Who is left for them to sue? They nailed the big players already and are wrapped up in those suits.

What? You sue over new products with newly granted patents just like Apple did with Samsung.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Obligatory factual observation: When Google announced agreement to take over Moto on August 15, 2011, Google filed the agreement with the SEC for investors to consider. That agreement included the requirement that Moto obtain Google's express written consent before undertaking any new legal action. Any new action in the last year and a half obviously was with Google's approval. Presumably, Google could have negotiated with Moto to cease all patent lawsuits on that date, with an indemnification over lost time/income to cover the possibility that the deal didn't go through, had they wanted.

Of course, Google had absolute unquestioned authority about 8 months ago, May, 2012 when the deal closed, and has continued to press these claims entirely on its own initiative for the past 8 months.

= = = = =

Editorial opinion: AFAICT, Google has exercised patent cases entirely within its legal rights, and I note that the industry had tens or hundreds of thousands of relevant patents before Google chose to get into the business, and in fact Motorola has been more than a little aggressive about using patents for its own interests. Somehow, business got done anyway, and after a couple of years of more intense activity on the patent front, it's obvious that the industry still managed to rise to something like a billion units per year. Continuing in that vein, I frankly expect these SEPs to fall especially flat, much flatter than the billion-dollar finding against Samsung will turn out to be, as was predicted back when Google bought Moto.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Google was asked about this at acquisition time and they stated outright that they intended to pursue the strategy. If they disagreed with it they would have settled by now. As part of the acquisition all legal actions had to be approved by them, and they continued to approve Motorola's actions up thorugh even today.

Don't all the major players pretty much own "essential" patents for every possible technological situation? They should just agree to shuffle royalties around in a big circle jerk instead of suing each other.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Google was asked about this at acquisition time and they stated outright that they intended to pursue the strategy. If they disagreed with it they inould have settled by now. As part of the acquisition all legal actions had to be approved by them, and they continued to approve Motorola's actions up thorugh even today.

Gone are the days when people claimed that Google was "good" and that they did no evil.Google is a company like every other massive technology company. They want to win marketshare. They want their stock-price to go up and to give money to their shareholders.

In August 2011 when Google announced that it would buy Motorola mobility, some people on Ars (Including me) said that Google would eventually use patents to attack other companies. Now this reality is becoming clear.

They always want to get rid of software patents, but the best way to fight fire is with fire.

Don't all the major players pretty much own "essential" patents for every possible technological situation? They should just agree to shuffle royalties around in a big circle jerk instead of suing each other.

Brilliant idea, but unfortunately already taken. Ever since Moto's abuse of the then-gentlemen's agreement over technology sharing, EU wireless standards have required licensing on Fair, Reasonable and Non-Discriminatory bases, all patents relevant to that technology.

Other patents by those companies are irrelevant to the deals, in fact, the FRAND language expressly forbids dragging them into negotiations over what “FRAND” means. So companies can collaborate on everybody having access to say, CDMA (or for this article, the rather more universally-used h.264), while still pursuing independent work that has nothing to do with video.

AFAICT, h.264 is the most popular format for vids embedded in Flash, is used in a whole bunch of functions such as satellite TV, and therefore is a leading choice in virtually every device capable of showing moving images. The lawsuits are mere hiccups in business that is going on fine. The biggest threat to h.264 is… h.265, which claims close to half the bandwidth for similar quality. It, too, will be set up with the opportunity for individual firms (presumably, including Google) to either

toss their patents into a pool, simply license at low cost and be done,

retain control/responsibility for licensing them onesie-twosie, because… well, unless they're expecting some monstrous result, I dunno why they'd want to deal with the hassle but I'm sure there's a good reason.

Yes, patent trolling. Trying to collect on patents that have been in used for 5 years or more and still not paid, even though they are guaranteed. At the very least, both sides acted poorly and this shouldn't be in court. At most, Microsoft ran whining to the court instead of actually negotiating.

EDIT: No matter what, since the two sides can't agree, the issue is now right where it should be, before a judge.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Google was asked about this at acquisition time and they stated outright that they intended to pursue the strategy. If they disagreed with it they would have settled by now. As part of the acquisition all legal actions had to be approved by them, and they continued to approve Motorola's actions up thorugh even today.

This is officially a Google strategy now.

But they haven't filed any new lawsuits either.

Yes they did. They started a suit against Apple through the ITC a few months back, then cancelled the whole thing when the FTC made it clear they weren't going to stand for the abuse of FRAND patents.

Most of this was set rolling before Google finished acquisition. Not to absolve them of blame or anything, because they've had almost a year to put the brakes on some of the FRAND bullshit that was going through when they did finally acquire.

Google was asked about this at acquisition time and they stated outright that they intended to pursue the strategy. If they disagreed with it they would have settled by now. As part of the acquisition all legal actions had to be approved by them, and they continued to approve Motorola's actions up thorugh even today.

This is officially a Google strategy now.

But they haven't filed any new lawsuits either.

Yes they did. They started a suit against Apple through the ITC a few months back, then cancelled the whole thing when the FTC made it clear they weren't going to stand for the abuse of FRAND patents.

As I already stated, I stand corrected, BUT the example given above, a complaint to the FTC, was NOT on a FRAND patent.

"While Motorola has typically used standards-essential patents in its lawsuits, the patents at issue in this one aren't tied to any industry standards."

Perhaps you have actual legal training (which I do NOT) and could inform us how a lawsuit affects the sued party (say, Microsoft) differently depending on whether it was started by Google, or a subsidiary now 100% owned/controlled by Google.

I think there is zero difference. The suits continue — they could be withdrawn with a one-line declaration on a piece of paper — because Google wants them to continue.

Car analogy: I am buying a car, and the seller leaves it idling in my driveway after I take the test drive. As I pay him, I notice it starting to roll backwards towards another car, jump into the driver's seat, … and check out the windshield wipers and take off the tacky fuzzy dice and bobblehead that I don't want. A half minute later, the car rolls down the street and up the sidewalk, creaming some poor woman pushing a baby carriage.

Bystander @sprockkets notes that even though I was in complete control of the car, it was the seller who didn't set the brake. I couldn't have been responsible for what happened.

Yes, patent trolling. Trying to collect on patents that have been in used for 5 years or more and still not paid, even though they are guaranteed. At the very least, both sides acted poorly and this shouldn't be in court. At most, Microsoft ran whining to the court instead of actually negotiating.

EDIT: No matter what, since the two sides can't agree, the issue is now right where it should be, before a judge.

With you 100% that the two wrangling parties are hashing it out before a court that they agree has authority to set terms that they could not.

But be a little careful in your interpretation that license fees are “still not paid, even though they are guaranteed.” Google (Moto) signed a pledge that they would license the patents on FRAND terms, but in return all they got was that the technology was incorporated into the standard, which guarantees a much huger audience for the tech than otherwise—a hell of a quid pro quo. That's all the rights they got; it's still up to them to get licensees to settle on acceptable terms (if they even want to bother, as opposed to tossing them into a patent pool).

The evidence that (then) Moto was licensing their work on the same (Non-Discriminatory) terms as they offered Microsoft, is quite weak—although following the case only casually, I haven't seen mention of even confidential info having been filed with the court to show that other licensees (and MPEG-LA lists several hundred who have licensed patents in that pool) paid anything at all, let alone 2.X% of their total revenues.

In fact, I'd be shocked if any company of the hundreds that show moving video paid even a minuscule fraction of 1%, for what have been characterized as rather minor contributions to a nearly-universally implemented standard. E.g., if I haven't mixed this up with another Google-v-Microsoft case, it covers interlaced video, of no interest on computers except for “compatibility” with the standard, not because it's actually useful. The usefulness is obviously a part of the fairness of any patent rate, especially the notion that patents which ONLY have value BECAUSE they're just how the standard is implemented.)

Perhaps you have actual legal training (which I do NOT) and could inform us how a lawsuit affects the sued party (say, Microsoft) differently depending on whether it was started by Google, or a subsidiary now 100% owned/controlled by Google.

I think there is zero difference. The suits continue — they could be withdrawn with a one-line declaration on a piece of paper — because Google wants them to continue.

Car analogy: I am buying a car, and the seller leaves it idling in my driveway after I take the test drive. As I pay him, I notice it starting to roll backwards towards another car, jump into the driver's seat, … and check out the windshield wipers and take off the tacky fuzzy dice and bobblehead that I don't want. A half minute later, the car rolls down the street and up the sidewalk, creaming some poor woman pushing a baby carriage.

Bystander @sprockkets notes that even though I was in complete control of the car, it was the seller who didn't set the brake. I couldn't have been responsible for what happened.

Um, sure. Where does MS and apple's patent lawsuits fit into this? You know, as a result of Moto's actions? I'm sure MS will be more than willing to drop their suit in return, and apple, oh, they'll more than stop suing as well.

I'm not going to even try because car analogies are the stupidest thing you can bring up.